Legal Articles

Trademarks may be registered as per the Trademarks Act of 1993 (the Act) in South Africa, which forms the legislative basis upon which proprietors may protect their trademarks from unauthorized use.

According to the Act, a trademark means ‘a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person’

Unregistered Trademark Infringement

Being a mark used for distinction purposes, there ought to be remedies where there is an infringement on the use of the trademark, by a third party.

The Act provides for three instances in Section 34 (1), in which infringement is accepted as having taken place:

1. The unauthorized use in the normal course of business where a mark identical to or nearly resembling the registered trademark is likely to deceive customers or cause confusion
2. The unauthorized use in the normal course of business where a mark identical or similar to the registered trademark is used to provide goods or services which are similar to that of the registered trademark’s goods or services – leading to deception or confusion
3. The unauthorized use in the normal course of business where a mark identical or similar to the registered trademark that is well-known in the republic creates an unfair advantage or is detrimental to the reputation of the registered trademark as well as causes deception or confusion

A question that often comes up is, are unregistered trademarks legally protected against unauthorized use by third parties?

Passing Off and Common Law in South Africa

South Africa has a hybrid legal system, with the Common Law being one of our main sources of law. A claimant may rely on the Common Law, to prove certain principles in order to be successful. The concept of passing-off is used to afford protection or defend a claim relating to unauthorized use of an unregistered trademark.

Passing-off is whereby a trader makes a misrepresentation, either deliberately or through negligence, to the public that his/her trade (business) is that of a competing trader or that the businesses are associated.  

The owner (claimant) of the mark will be required, as was held in the case of Adidas AG and Another v Pepkor Retail Ltd (14605/2009) [2011] ZAWCHC, to prove that the mark has become so distinct such that to the public, it has acquired substantial significance in relation to identifying the goods or services of its business. In other words, the claimant must prove the presence of a reputation. Proving a reputation will be dependent upon factors such as sales figures, advertising expenditure to promote the goods or services associated with the mark, the period that the mark has been used by the claimant as well as the uniqueness of the mark amongst others.

It will also be required for the claimant to prove that the use of the mark by the infringing party was meant to deceive and cause confusion amongst the consumers, resulting in actual or probable injury to the reputation of the claimant’s business. Consequently, it is not only actual injury to the trade that needs to be proven, but even probable injury is also sufficient as was noted in the case of Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd [1977] 4 All SA.

As was noted in the case of Danco Clothing (Pty) Ltd v Nu-Care Marketing and Sales Promotions (Pty) Ltd and Another (675/89) [1991] ZASCA, the onus rests on the claimant to prove that the use of the mark by the infringing party was meant to deceive or cause confusion, on a balance of probabilities.

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